OPPOSITION Nо B 3 080 537

Bimbo, S.A., C/ Josep Pla, 2-B2 (Torres Diagonal Litoral), 08019 Barcelona, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Dochirnie Pidpryiemstvo ‘kondyterska Korporatsiia ‘roshen’, 1^st Corpus, 1 Nauky Ave, 03039 Kyiv, Ukraine (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 537 is upheld for all the contested goods.

2. European Union trade mark application No 18 005 600 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 005 600 for the figurative mark . The opposition is based on, inter alia, Spanish trade mark registration No 2 689 432 for the word mark ‘BIMBO’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

PROOF OF USE

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 689 432 for the word mark ‘BIMBO’.

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the earlier Spanish trade mark registration No 2 689 432, on which the opposition is based, and which was published on 16/06/2006.

The date of filing of the contested application is 31/12/2018.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 31/12/2013 to 30/12/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 30: Coffee-based beverages and coffee milk-based beverages, milk powder, cocoa, chocolate, cereals, fruits, sugar, herbs or spices or its combinations; tea-based beverages, infusions; cocoa, cocoa-based beverages, chocolate and chocolate powder extracts, granulated or liquid; sugar, rice, tapioca, sago, flour and preparations made from cereals, bread, cookies, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, condiments; fruit sauces, spices; herbs for drinks preparations; blends that mainly consists in herbs with dried fruits addition for beverages preparations; herbs extracts, not for medical use; ice.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 29/11/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 04/02/2020 to submit evidence of use of the earlier trade mark. On 04/02/2020, within the time limit, the opponent submitted evidence of use.

Additionally, according to the Office’s practice explained in the Guidelines, ‘any evidence that has been submitted by the opponent at any time during the proceedings before the expiry of the time limit for providing proof of use, even before the applicant’s request for proof of use, has to be automatically taken into account when assessing proof of use.’¹

On 23/05/2019, the opponent submitted various documents in order to substantiate its claim of reputation for the earlier marks. These documents must also therefore be taken into account in the assessment of the proof of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following.

Documents submitted on 23/05/2019:

 Document 3: a copy of an opposition decision of 10/05/2010, B 1 295 718, stating that the mark ‘BIMBO’ is the leader in the industrial bread sector in Spain, and a copy of an opposition decision of 28/01/2011, B 1 563 413, stating that the mark ‘BIMBO’ has a high recognition among the relevant public in Spain for bread. Additionally, in the letter of 23/05/2019, the opponent made reference to various decisions of the Spanish Patent and Trade Mark Office, in which the reputation of ‘BIMBO’ signs was recognised.

 Document 4: a copy of a ‘Diario Oficial de la Unión Europea’ containing a reference to a judgment of the General Court (14/12/2012, T‑357/11, GRUPO BIMBO (fig.) / BIMBO et al., EU:T:2012:696), stating that the earlier mark ‘BIMBO’ has an extremely high degree of reputation in Spain in relation to industrial bread.

 Document 5: a print-out of 27/03/2019 of a Google search for the word ‘BIMBO’, which shows around 111 million results.

 Document 6: a certificate dated 08/03/2016 from the Financial Vice President of Bimbo Iberia, indicating the impressive value (several million euros) of the ‘BIMBO’ brand at the moment of the company’s acquisition, and an even higher figure for the company’s subsequent annual intangible assets valuation (valuation date: December 2015).

 Document 7: several invoices from 2016-2018 confirming the opponent’s advertising expenditure and cooperation with various retailers in Spain, such as Champion, Coaliment and Caprabo. Some of the invoices contain a reference to the trade mark ‘BIMBO’: ‘Redención de promociones, marca: BIMBO’.

 Document 8: an overview of press articles from 2017 and 2018 in the Spanish media, such as Anuncios, Expansión, Diez Minutos, ¡Qué me dices!, Gondola Digital, Financial Food, among others. The publications refer to the opponent as ‘one of the biggest organisations of the food sector in Spain and Portugal’. ‘Over its 50 years of history, it has maintained its leadership position due to the quality of its more than 100 products and the strength of trade marks such as Bimbo … With innovation and health as its main values, its commitment is to deliver every day fresh, soft and delicious products to millions of homes.’ Grupo BIMBO is described as the biggest bakery in the world (Expansion/Catalunya, 14/03/2018). Moreover, the ‘Bimbo’ mark is referred to as one of the 10 most purchased brands of mass-consumption products by Spanish consumers in the Brand Footprint report developed by Kantar Worldpanel (Anuncios, 19/06/2017; InfoRetail, 2017), and as the leading brand of bread in Spain. The ‘Bimbo’ trade mark was also ranked as one of the most innovative brands in Spain in 2016 (Expansión, 11/05/2017). ‘BIMBO’-branded products are visible in some of the photos:

 Document 9: a document from a Spanish advertising company, ‘Optimum Media Direction SLU’, in Spanish, which certifies various campaigns carried out for Bimbo S.A.U. in different advertising media during 2013–2017 for significant amounts, ranging from several thousands to millions of euros per year. The titles of the marketing campaigns are given in the original document and the majority relate to ‘BIMBO’ trade marks: for example, ‘Bimbo – Acción suplemento Leo Messi’, ‘Total Bimbo exterior Abril 2013’, ‘Bimbo La Roja Mundial 2014’, ‘Bimbo - 50°aniversario’, ‘Bimbo – Burger Brioche’ and ‘Bimbo – 100% Natural Abril – Mayo 2017’.

 Document 10: studies performed by the company ‘Punto de Fuga’ analysing and reflecting on the results of some of the opponent’s product campaigns. These include, ‘Bimbo 100% natural’, ‘Bimbo sin corteza’, ‘Oroweat’, ‘Rustik Bakery’, ‘Thins’ and ‘Pan tostado 2017’, all dated 2017. Parts of the reports were translated by the opponent. From the translations, it can be ascertained that ‘Bimbo’ has a long history in the market and is one of the first brands that consumers remember with respect to soft bread commercials. Due to strong associations with the general bread category, ‘Bimbo’ is also the most well-known brand in the toasted bread category.

 Document 11: various studies of ‘Bimbo’ marks and their position in the sector.

o A list from ‘Superbrands’, in Spanish, showing the marks classified as ‘superbrands’ in 2016, including the mark ‘Bimbo’.

o A ‘Brand Footprint 2015’ study by Kantar Worldpanel, in which ‘Bimbo’ appears as one of the 50 most chosen consumer brands in the world, in 2014. In ‘Brand Footprint España 2015’, the ‘Bimbo’ mark appears in 10^th position in the general ranking of mass consumption products and 7^th position in the food sector in 2014. It was also 7^th in 2013. Products bearing the trade mark are found in more than 50 % of Spanish households (a market penetration of more than 53.7 % in 2015).

o A study by ‘GfK’ (2016) entitled ‘Motivational map’, evaluating the opponent’s brands in general, its various products and their position on the Spanish market. The report was partially translated by the opponent. According to the translation of page 59 of the report, consumers consider the ‘Bimbo’ mark a leading brand, a quality reference, a pioneer brand and the expert in bread. Some photos of products bearing the ‘BIMBO’ mark are also visible:

 Document 12: undated photographs of stands and shop shelves in different supermarkets with products bearing the mark ‘BIMBO’, such as bread, toasted bread and hamburger buns. The mark is represented as

Documents submitted on 04/02/2020:

 Document 1: historical screen captures of the opponent’s webpage www.bimbo.es obtained from the ‘Wayback Machine’ web archive and a recent printout of this webpage dated 16/07/2019, all in Spanish. The historical screen captures are dated 2014-2019 and show photos of various products bearing the mark ‘BIMBO’:

, .

 Document 2: the document from a Spanish advertising company already submitted as document 9 on 23/05/2019.

 Document 3: the certificate dated 08/03/2016 from the Financial Vice President of Bimbo Iberia already submitted as document 6 on 23/05/2019.

 Document 4: a document in Spanish dated 31/01/2020, not translated. According to the opponent’s letter of 04/02/2020, it is a certificate confirming the net sales value of the products commercialised under the ‘BIMBO’ trade mark. The table included shows impressive amounts reaching hundreds of millions during the years 2015-2019.

 Document 5: Certificates from four of the opponent’s providers, dated January 2020, stating that during 2015-2020 (2015-2019 in case of ZESTAN S.A.) they supplied the opponent with various packaging materials, stands and displays bearing the ‘BIMBO’ trade mark. Sample pictures of these materials are included in the certificates:

The certificates also confirm various graphical representations of the ‘BIMBO’ trade mark:

 Document 6: several dozen invoices issued by the opponent in 2014-2018 to customers in Spain, including large retailers of fast-moving consumer goods, such as Carrefour, Eroski, Alcampo, El Corte Ingles and Caprabo. The invoices refer to products such as ‘BIMBO ROLLS’, ‘BIMBO CORTEZA BLANCA’, ‘BIMBO ENROLLADOS’ ‘BIMBO CANAPES’, ‘BIMBO PANECILLOS’, ‘BIMBO FLATS’, ‘PAN BIMBO SC’, ‘BIMBO 100% INTEGRAL’, ‘BIMBO REBANADA ARTES’, ‘BIMBO OMEGA 3’, ‘CROISSANT BOLSA BIMBO’ and ‘PAN TOST TRADICIONAL BIMBO’. This document also contains some of the invoices already submitted as document 7 on 23/05/2019.

 Document 7: an overview of press articles from 2017 and 2018 in the Spanish media, already submitted as document 8 on 23/05/2019.

 Document 8: undated photographs of shop shelves and stands, including promotional stands with a demonstrator, offering consumers the opponent’s products to taste. Products bearing the mark ‘Bimbo’ include bread, buns and hamburger buns. The mark is represented as . A product catalogue, ‘Bimbo Hoteles’, in Spanish, undated, with various types of bread and bakery products. In the ‘snack’ category, breadsticks called ‘Bimbo palitos blancos con aceite de oliva’ are included .

 Document 9: printouts of the web pages of various Spanish retailers, such as Caprabo, DIA and El Corte Ingles, with various ‘BIMBO’ branded products available in these supermarkets. The printouts are dated 16/07/2019, and the products bearing the mark ‘BIMBO’ include hot-dog buns, bread, breadsticks, toasts, hamburger buns, mini toasts, soft flatbread, buns and croissants.

 Document 10: designs of packaging bearing the ‘BIMBO’ trade mark. The majority of the designs are dated within the relevant period (2017-2018), while some are not dated or the date is illegible.

 Document 11: market research reports prepared by the company ‘Punto de Fuga’, entitled ‘Bimbo 100% natural’, ‘Bimbo sin corteza’ and ‘Pan tostado 2017’, all dated 2017. All of these reports were already included in document 10, submitted on 23/05/2019. A study by ‘GfK’ (2016), entitled ‘Motivational map’, which was already included in document 11, submitted on 23/05/2019.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Furthermore, the applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as the certificates of value of the ‘BIMBO’ trade mark and of net sales of products commercialised under the trade mark ‘BIMBO’ are concerned (documents 3 and 4 submitted on 04/02/2020), Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

The invoices, market research reports, overview of Spanish press articles from 2017-2018 and webpage extracts show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (EUR) and the addresses on the invoices of the clients in Spain. Therefore, the evidence relates to the relevant territory.

Time of use

The majority of the evidence is dated within the relevant period. Some of the evidence refers to the period before, and some to the period after the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period corroborates the long-standing use of the opponent’s mark within the relevant period.

Therefore, the time of use is also satisfactorily demonstrated.

Extent of use

The documents filed, namely the invoices, market research reports, advertising expenditures, press articles and certificates originating from the opponent, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The applicant claims that there is no reliable evidence regarding the volume of sales of the earlier mark. Firstly, the opponent is not obliged to reveal the total volume of sales or turnover figures in order to prove use of its trade mark. Despite this, the opponent did submit an internal document containing this data. Secondly, the opponent provided numerous invoices documenting the sales of ‘BIMBO’ products over the entire relevant period, which are officially recognised accounting documents. Thirdly, there are various documents from independent sources confirming the leading position of the ‘BIMBO’ trade mark in the bread sector in Spain within the relevant period, which is an obvious indication of the extent of its use.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of (i) use of the sign in accordance with its function, of (ii) use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of (iii) its use for the goods and services for which it is registered.

(i) The applicant claims that the earlier mark has been used as a company name. However, the evidence shows that the mark has been used not only as the company name of the opponent, but also in a trade mark sense, in accordance with its function, affixed directly to the goods or to their packaging. This is demonstrated by the numerous photos of the products and of their packaging materials and various advertisements, all with the goods bearing the mark ‘BIMBO’.

(ii) According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark ‘BIMBO’ was used in various slightly stylised characters, some with additional figurative elements: . However, none of these stylisations alters the distinctive character of the mark as registered, as they are merely decorative and therefore non-distinctive.

Moreover, the trade mark ‘BIMBO’ was used in combination with non-distinctive decorations and other distinctive figurative elements: .

However, in trade, signs are often used together with other signs (e.g. to designate a sub-brand and/or a house mark, or together with a company name). According to the Office’s practice, explained in the guidelines,

… there is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark …

(06/11/2014, T‑463/12, MB, EU:T:2014:935, § 43).

It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously …

(07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 36.)’²

In the present case, the trade mark ‘BIMBO’ was used in combination with the figurative device of a white bear. These two elements are used together but remain independent from each other and perform their distinguishing function as separate signs.

Therefore, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

(iii) However, the evidence submitted does not show genuine use of the trade mark for all the goods covered by it and on which the opposition is based, as listed above.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence clearly proves use of the earlier mark for bread. Other products are mentioned that belong to the broad category of preparations made from cereals, namely hamburger buns, croissants, toasts, etc.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the Opposition Division considers, for reasons of procedural economy, that it is clearly sufficient to prove genuine use of the earlier trade mark ’BIMBO’ during the relevant period in the relevant territory, at least in relation to bread.

Therefore, the Opposition Division will only consider bread in its further examination of the opposition.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 31/12/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent claimed reputation and for which use has been proven, namely bread.

The opposition is directed against the following goods:

Class 30: Caramels [candy]; sponge cakes; chocolate; cookies; pastries; crackers; waffles; pralines; cakes; candy; biscuits; confectionery; peanut confectionery; almond confectionery.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 23/05/2019 the opponent submitted the evidence of reputation listed above under ‘proof of use’.

On 04/02/2020, after expiry of the time limit for substantiation of the earlier right, the opponent submitted additional evidence in reply to the applicant’s request for proof of use, also listed above.

Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

According to Article 8(5) EUTMDR, where after the expiry of the period referred to in Article 7(1) EUTMDR, the opponent submits facts and evidence that supplement relevant facts or evidence submitted within that period and that relate to the same requirement laid down in Article 7(2) EUTMDR, the Office has to exercise the discretion conferred on it by Article 95(2) EUTMR in deciding whether to accept these supplementing facts or evidence. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

In exercising its discretion, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.

In this regard, the Office considers that the opponent did submit extensive relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 04/02/2020.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a very strong reputation in Spain for bread.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources.

Brand rankings and trade mark studies performed by third parties, such as ‘Superbrands’, ‘Punto de Fuga’, or ‘Brand Footprint 2015’ by ‘Kantar Worldpanel’ and ‘GfK’ (documents 10 and 11 of 23/05/2019), show that the ‘BIMBO’ mark is one of the most important brands in the food sector in Spain and is perceived by consumers as a leading brand for bread products. More than 53 % of Spanish households buy ‘Bimbo’ products. The press articles submitted by the opponent (document 8 of 23/05/2019) refer to the opponent’s long history and the ‘BIMBO’ mark’s leading position in the bread sector, and mention that the ‘BIMBO’ mark is one of the 10 most purchased brands by Spanish consumers.

Its high ranking among leading food brands, the opponent’s marketing expenditures, net sales values and market position in the bread sector (confirmed by independent studies), together with various references in the press to the mark’s success, all unequivocally show that the mark enjoys a very high degree of recognition among the relevant public in relation to bread.

b) The signs

BIMBO
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘BIMBO’. The protection of a word mark concerns the word as such. Therefore, contrary to the applicant’s argument, as long as it does not depart from the usual style of capitalisation, it is irrelevant if it is written in upper- or lower-case letters. Moreover, as a word mark, it has no elements that could be considered dominant (visually more eye-catching) than other elements.

The verbal element ‘BIMBO’ has no meaning for the relevant public and is distinctive to a normal degree.

The contested sign is a figurative mark comprising a verbal element ‘BIM BOM’, written in slightly stylised white upper-case letters and repeated twice in the middle of a grey square. The left and right sides of the square are decorated with an abstract pattern of various geometric figures in black, white and grey.

The verbal elements ‘BIM BOM’ and the grey square with the ornaments reproducing abstract and geometric shapes have no clear meaning related to the relevant goods and are, therefore, distinctive to a normal degree. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). This is particularly applicable to the present case, because the figurative element is quite complex and abstract. Therefore, it will not easily be remembered and recalled by the relevant public.

The English and Portuguese meanings of the verbal elements ‘BIMBO’ and ‘BIM BOM’ cited by the applicant are not likely to be perceived by the relevant Spanish-speaking public.

Visually, the signs coincide in the letters ‘BIMBO’, which constitute the entirety of the earlier mark and are entirely contained in the contested sign’s verbal elements ‘BIM BOM’, albeit in two lines and listed twice. The signs differ in the last additional letter ‘M’ of the contested sign’s verbal elements and in its figurative device with an abstract pattern. However, the latter has a limited impact on the perception of the sign, for the reasoned explained above.

Therefore, the signs are visually similar to a below-average degree.

Aurally, contrary to the applicant’s argument, since consumers tend to shorten marks containing several words, it is highly likely that the contested sign will be referred to as ‘BIM BOM’, said once only. Therefore, the pronunciation of the signs coincides in the sound of the letters ‛BIMBO*’, comprising the entire earlier mark. Visual separation of the letters ‘BIMBOM’ in two words, ‘BIM BOM’, will hardly be aurally perceivable. The pronunciation differs in the sound of the contested sign’s last additional letter ‛M’, which, being its final letter, is less conspicuous.

Therefore, the signs are aurally highly similar.

Conceptually, neither sign’s verbal elements have a meaning for the public in the relevant territory. The figurative element of the contested sign is abstract and does not convey any clear concept. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs under comparison are similar to the extent that the earlier mark ‘BIMBO’ is entirely contained in the contested sign’s verbal elements, ‘BIM BOM’.

c) The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the earlier mark is brought to mind by the contested sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44).

There are visual similarities and strong aural similarities between the signs, because the earlier reputed mark ‘BIMBO’ is entirely contained in the contested sign’s verbal element ‘BIM BOM’.

The opponent’s mark ‘BIMBO’ has acquired a very strong reputation in Spain in relation to bread and is one of the ten most purchased brands of mass-consumption products in Spain.

Another factor to consider when assessing whether there is a ‘link’ between the signs is the relevant goods and services. The opposition is directed against various food products in Class 30, namely confectionery, cakes, chocolate, caramels, pastries, biscuits, crackers and wafers. The reputation has been proven for bread. These goods are either similar or have a very close connection to each other, even if some of them are not normally produced by the same companies, because they are all mass-consumption food products with the same general purpose of nourishment. Furthermore, they are frequently purchased together by the same consumers at the same points of sale.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested sign, the relevant consumers will be likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The marks at issue are highly similar, and the reputed goods could clearly be used by the same consumers in the same field as the applicant’s goods. As a result of the established reputation of the trade mark ‘BIMBO’, this means that use of the contested sign is extremely likely to take unfair advantage of the reputation and distinctiveness of the earlier trade mark. For instance, consumers familiar with the well-established trade mark ‘BIMBO’ could be confused into thinking that the contested sign is an extension of that trade mark into related goods. In this case, the applicant would benefit unfairly from the prestige and the quality brand image created by BIMBO, S.A.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The goods for which protection is sought are mass-consumption food products (confectionery, cakes, chocolate, caramels, pastries, biscuits, crackers, wafers, etc.) that target average consumers. The goods for which reputation has been established (bread) target the same consumers.

As can be seen from the documents provided by the opponent, the earlier mark ‘BIMBO’ conveys an image of traditional and healthy but also innovative, market-leading products in the bread sector.

When used on the same market of mass consumption food products, the contested sign will bring the earlier reputed trade mark to the minds of the consumers, and the qualities associated with the opponent’s goods may easily be attributed to those of the applicant. This may stimulate the sales of the applicant’s goods to an extent that may be disproportionately high in comparison with the size of their own promotional investment. Therefore, it may lead to the unacceptable situation where the applicant is allowed to ‘free-ride’ on the opponent’s investment in promoting and building up goodwill for its mark.

In other words, the use of the contested mark would give the applicant an advantage in the marketing of its goods, in that it may benefit from the reputation and image associated with the earlier mark to enhance sales of its own products.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

f) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Angela DI BLASIO

Anna ZIÓŁKOWSKA

María del Carmen COBOS PALOMO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.